Is it even possible to protect a single colour as a trademark?
Entrepreneurs, hearing that it is actually possible (and this type of trademarks exist and are doing well), shudder at the very thought. Common sense tells us in the first place that it is impossible, you cannot appropriate the color, because it is a restriction of competition; After all, color is a public good, and yet…
To begin with, it is worth explaining what a trademark is in general and what functions it performs. It is the definition of a mark that determines whether a colour can be a trademark.
Pursuant to Article 120(1) of the Act of 30 June 2000. Industrial property law:
A trademark can be any sign that can be represented graphically, if such a sign is suitable for distinguishing the goods of one company from the goods of another company.
A trademark must therefore have distinctiveness, i.e. the ability to identify the goods or services of a given enterprise and distinguish them from the goods/services of another enterprise. Lack of such capacity means that the authority examining a given application in the course of the registration procedure, whether it is the Polish Patent Office or the EUIPO, will refuse to grant the right of protection.
Admittedly…
a trademark, within the meaning of Article 120(1) of the above-mentioned Act, may be, in particular, a word, including a surname, a drawing, a letter, a number, a colour, a spatial form, including the shape of goods or packaging, as well as a sound,
However, the above-mentioned list does not automatically determine that each of the above-mentioned types of signs has sufficient distinctiveness to unambiguously distinguish a specific good/service.
The prevailing belief is that colour as such (per se), and especially basic colours, as a rule, does not have the so-called abstract distinctiveness, which does not exclude its registration, for example, in the form of a colour combination in the form of a logo (which is commonly used). The problem with obtaining the right arises when an entrepreneur wants to apply for a single colour as a trademark.
The examination of the distinctiveness condition of a sign is particularly strictly observed in the case of colour applications, due to the interest of all entrepreneurs. Granting a monopoly to a single entity may lead to a threat to the freedom of competition.
Practice shows that obtaining protection for a trademark in the form of a single colour is successful primarily if the applicant demonstrates (already at the stage of the application procedure) that a given colour has acquired, as a result of its long-term use, the so-called secondary distinctiveness.
The indicated ground for obtaining protection applies only to cases in which a sign originally did not have distinctive character, but as a result of intensive use (in relation to the goods or services in question) it acquired such character. Proving that a specific colour is identified by buyers with a product or manufacturer (such as lilac for Milka, Magenta T-mobile pink or orange Orange) is an extremely tedious effort and a considerable investment in advertising, promotion, use of the brand and its dissemination among consumers. white color for milk).
We have an idea for a sign in the form of a color, but what next?
Although the law does not currently require the graphic representation of a mark, filing a colour as a trademark is not an easy task. Monopolization of color is a real threat to competition.
For years, there has been a well-established rule in the case law, according to which an application for a trademark in the form of a color requires an indication of a specific shade or proportion of colors (Red Bull’s lost fight to maintain protection for a silver-blue trademark in the 50:50 ratio is reminded here). It is therefore crucial to meticulously and precisely describe and present the colour or colour combinations in the application itself.
The second issue is to demonstrate (submit a whole lot of evidence) that such a colour has been used by the entrepreneur as a form of independent identification of specific products/services, in an unchanged form, for a longer period of time, and the buyers associate the mark and identify the service or goods marked with a given colour with the origin of a given entrepreneur. What matters here are real evidence of the use of the mark, investments made in marketing, opinion polls, the scale and range of use of the mark. The evidence must be objective, according to the common principle: “everyone can see what the sign is”.
The use of a trademark in the form of colour – what the competition thinks about it
Getting a monopoly on color is one thing, but what about protecting it in order to maintain true exclusivity, and what about prosecuting competitors?
Taking care of preserving colour as a trademark requires great consistency and determination of the proprietor of such a mark. It should be remembered that the use of the trademark is a necessary condition for maintaining the law. Lack of evidence of (actual) use of the mark in trade may lead to the loss of the right (expiration of the right due to lack of use). It is worth mentioning that it is the proprietor who is obliged to prove the use of the mark.
Practice shows how many questions and doubts arise on the part of entrepreneurs when the proprietor of a trademark in the form of a single colour begins a battle to maintain exclusivity, directing claims for cessation of use of the colour to other competitors. Below are just some of them:
- If I use a color on a product, but it is only one of the colors, can another entrepreneur forbid me to do so?
- If the general appearance of the products of the trademark proprietor and the infringer are different, can we speak of infringement?
- If there are other entrepreneurs on the market who use a given colour, can we conclude that the entrepreneur’s actions are unlawful?
- How far can a monopoly from trademark registration reach if the colors of the mark and the product of another entrepreneur differ in shades?
- How important is it to evaluate the perception of the target audience? If the use of a given mark is a common feature, is it possible to assume that the monopoly has been granted unlawfully and its use constitutes an abuse of law?
- Can every use of a colour by competitors be treated as a risk of acting to the detriment of the rightholder’s interest?
The questions posed are “real-life” cases, appearing in various situations and different contexts. On the other hand, they become particularly interesting in the case of defending a monopoly granted on colour. After all, colors are part of our lives. In this aspect, the protests of those entrepreneurs who are outraged against the monopolization of colors seem understandable. The line demarcating the role of a trademark and the legitimacy of its protection against abuse seems to be quite thin.
Trademark law is a fascinating “fodder” for interesting cases that we have to face. Practice shows more and more cases of obtaining a monopoly on colors, which are worth knowing about in order to effectively protect the business against the risk of infringement. Unfortunately, ignorance of the law or lack of fault in action do not belong to the catalogue of exemptions from legal liability. Therefore, it is worth being vigilant and prudent, but also open and foresighted. Let’s take care of our rights!
Author: Helena Gajek
